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February Editorial: The Age of Design
In her Editorial (free to read) for the February issue of our Journal, Carina Gommers reflects on the state of design law in Europe.
In the recent past, some major changes have been having an impact on the EU legislative framework for intellectual property rights. First, we had a revision of the trade mark system and, more recently, an important copyright reform was completed. The area of design rights has so far been untouched. However, it has been 18 years since the Council Regulation (EC) No 6/2002 of 12 December 2001 which introduced the Community Design was enacted. Directive 98/71/EC of the European Parliament and of the Council harmonising the legal protection of designs in the EU Member States goes even back to 13 October 1998. This coming of age of the design protection within the EU is a good opportunity for an evaluation.
The European Commission took a first step in this direction by launching a public consultation at the end of 2018. Nearly 200 replies were received from different stakeholders and the results were published in a Factual Summary Report. This report provides an overview of the contributions from stakeholders but does not yet include the European Commission’s point of view. That point of view will probably become available during the course of 2020, when the Evaluation Report is published. Only after publication of that report, legislative initiatives – if any – will be proposed. It is therefore probably safe not to expect any proposal for legislative initiatives reforming the current legal framework on designs before 2021.
So, what can we already infer now from the Factual Summary Report?
In sum, the contributors considered that the EU legislation on designs works well and that harmonization between the legal regimes available in the EU Members States has brought added value. The contributors, however, also considered that there are some shortcomings in the current framework. A legislative update and upgrade on a number of matters would therefore be useful.
First, further harmonization of the rules on spare parts seems desirable. Several EU Member States, including Germany and France, have indeed taken their own initiatives regarding specific legislation covering spare parts, which the European Commission follows with interest. Other issues where further harmonization would be welcome are the product indication and the design’s scope of protection, the conditions of multiple applications, the right to the design, the right of prior use, and the substantive grounds for refusal.
The contributors also approved the work done by the European Union Intellectual Property Office (EUIPO) in the field of designs and are content with the services provided. Specifically regarding the substantive grounds for refusal, the contributors considered, however, that it is not necessary for the EUIPO to carry out an examination of the novelty of the design before its registration. Some of the contributors nevertheless indicated that special image searches tools could be made available to help assess novelty. Maybe the further development of Artificial Intelligence tools can be of assistance in this respect.
Another area where an initiative may be taken is the term of protection for Unregistered Community Designs, where less than half of the contributors considered the term to be appropriate. In comparison, the term of protection for Registered Community Designs did seem suitable for the majority of the contributors.
A question regarding goods in transit was also addressed, i.e. whether the scope of protection should allow preventing third parties from transiting counterfeit design goods throughout the EU even if the goods are not intended to be placed on the internal market. This links back to the revision of the legal framework for trade marks, where the scope of protection has indeed been broadened to include actions against goods in transit under certain circumstances. From the contributors who had an opinion on this matter, a vast majority was in favour of a comparable broadening of the scope of protection of designs. There is indeed no objective difference between trade mark and design rights which would allow for a different treatment regarding goods in transit. A streamlining of both regimes would therefore be desirable and increase legal certainty for stakeholders.
All in all, the contributors have thus given the European Commission enough food for thought to reform and modernize the current design rights system so as to make it fit for a new decade.